USPTO Patents Application 10804820

Application No. 10/804,820

Reply to Office Action dated January 22, 2007

REMARKS

This amendment is being filed in response to the Office Action having a mailing date
of January 22, 2007. Claims 17, 22-23, 25, and 27 are amended as shown. No new matter has been
added. With this amendment, claims 1-32 are pending in the application.

I. Oath/Declaration

The Office Action stated that the "oath or declaration is defective" for not identifying
the mailing address of each inventor, for not stating that the person making the oath or declaration
acknowledges the duty to disclose information material to patentabilty, and for not identifying the
city and state of residence of the inventors. Further, the present Office Action stated that the post
office address as required by 37 C.R.R. § 1.33(a) was not given. For the reasons set forth below, it
is respectfully submitted that all of said information was previously and properly provided.

With regards to the mailing address and city/state of residence of each inventor, an
Application Data Sheet (ADS) was filed along with the other application papers on March 19, 2004.
This ADS provided the mailing address and city/state of residence of each inventor and is therefore
in compliance with U.S. Patent Office rules/requirements under 37 C.R.R. §§ 1.63(c) and 1.76.
This ADS has been received by the U.S. Patent Office (said ADS being currently viewable and
accessible via the U.S. Patent Office PAIR system) and a hardcopy thereof should be present in the
file wrapper of the present application for further verification purposes.

With regards to the statement of acknowledgement of the duty to disclose
information material to patentability, said statement was indeed set forth in the middle 4 th paragraph
of the executed declaration that was filed on November 2, 2004.

With regards to the post office address required by 37 C.R.R. § 1.33(a), Customer
Number 35243 was provided on page 4 of the ADS filed on March 19, 2004. The mailing address
of Seed Intellectual Property Law Group (the law firm of the undersigned attorney) has been and is
associated with Customer Number 35243. As stated by 37 C.R.R. § 1.33(a): "... if given, [the U.S.
Patent Office] will select the address associated with a Customer Number over a typed correspondence
address." Therefore, the post office address required by 37 C.R.R. § 1.33(a) was indeed provided
through the proper filing of the ADS having Customer Number 35243 indicated therein.

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

In view of the above, it is kindly requested that the Office Action's requirement for a
new oath/declaration be withdrawn.

II. Discussion of Examiner note

The present Office Action asserted that the word "for" (in claims 1,4, 14, and 21)
and the phrase "capable of in claim 27 "indicate intended use and as such do not carry patentable
weight." This assertion is respectfully traversed.

With regards to the word "for" in claims 1,4, 14, and 21, said word "for" is used in a
grammatical sense to provide an association between the claimed act and another element in the
claim. For instance in claim 1 : for a match, a software feature is obtained that corresponds to the
match. For instance in claim 4: for at least one position of the alphanumeric string, a first location
is determined from the CCF where a corresponding software feature is available. With regards to
claim 14, a location is specified "for each of the position," and so forth. With regards to claim 27,
claim 27 has been amended to remove the "capable of phrase.

With regards to the invocation of 35 U.S.C. § 112, sixth paragraph, claim 22 for
example recites "a means for storing first information in an electronic device" and "a means for
storing second information." Example structures corresponding to these means-plus-function
elements that have been disclosed in the specification respectively include the storage medium 104
that stores the product configuration matrix (PCM), and the file system 202 and/or the network(s)
204/206 that store(s) the configuration control file (CCF). Claim 19 as originally filed discloses a
processor (such as the processor 102 or an external processor) to perform "comparing." Because
corresponding structures have been disclosed in the specification with respect to the elements
recited in claims 22-26, it is respectfully submitted that 35 U.S.C. § 112, sixth paragraph has been
invoked for claims 22-26.

It is kindly requested therefore that all elements in claims 1, 4, 14, and 21-27 be
given their due weight.

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

III. Objections to the specification

The Office Action objected to the Abstract for being in excess of 150 words. The
Abstract is amended as shown to be 150 words or less.

The Office Action objected to paragraph [0025] and advised that said paragraph be
amended to say "that a browser 120 is stored in the storage medium 104." The Examiner is thanked
for this suggestion. Accordingly, the specification is amended as shown in a manner consistent with
the Examiner's suggestion. It is respectfully submitted that said amendment to the specification
does not introduce new matter, since said amendment is consistent with the text on page 6, lines 23-
26 and elsewhere in the present application.

The specification is amended as shown to delete the paragraph that incorporates
patent and non-patent publications by reference. Said paragraph is unnecessary since no such
publications were specifically set forth for purposes of incorporating by reference. With this
amendment to the specification, the corresponding objection set forth in the present Office Action is
made moot.

IV. Rejections under 35 U.S.C. § 1 12, second paragraph

Claims 17-18 and 25-26 were rejected under 35 U.S.C. § 112, second paragraph for
being indefinite, due to the recitation of the term "substantially." It is noted that since claim 26
does not recite the term "substantially," the rejection of claim 26 under 35 U.S.C. § 112, second
paragraph is improper.

The term "substantially" is now removed from amended claims 17-18 and 25,
thereby rendering moot the rejection of claims 17-18 and 25 under 35 U.S.C. § 112, second
paragraph.

V. Discussion of the claims and cited reference

Claims 1-13 and 15-32 were rejected under 35 U.S.C. § 102(e) as being anticipated
by Chen (U.S. Patent Application Publication No. 2005/0102660). Claim 14 was rejected under 35

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

U.S.C. § 103(a) as being unpatentable over Chen. For the reasons set forth below, these rejections
are respectfully traversed.

First, to assist in understanding the subject matter of the claims, a disclosed
embodiment will now be discussed in comparison to the applied references. Of course, the
discussion of the disclosed embodiment, and the discussion of the differences between the disclosed
embodiment and subject matter described in the applied references, do not define the scope or
interpretation of any of the claims. Instead, such discussed differences are intended to merely help
the Examiner appreciate important claim distinctions discussed thereafter.

One embodiment disclosed by the present applicants stores a product configuration
matrix (PCM) in a device, said PCM providing "identification information, including which
software features should be installed in the device." See, e.g., the Abstract of the present
application. For example, "the PCM 122 can comprise the following string: CK30CA1214001804.
The first four characters (the characters 'CK30') can identify the type of device 100. The
subsequent alphanumeric characters can identify a version or model number, followed by
identification of software features that can be configured in the device 100." See, e.g., page 7, lines
4-8 and elsewhere in the present application. The string from the PCM is compared with an
alphanumeric string (such as ******]*********) D f a product configuration mask of a
configuration control file (CCF), to determine where matching characters are present. The software
feature associated with the matching character is obtained and loaded into the device 100. See, e.g.,
page 8, line 21 to page 9, line 4 and elsewhere in the present application.

In contrast and as will be explained in more detail below, Chen compares an image
of an installed software resident in his device to a newer version of the same software — in other
words, Chen performs an image-to-software comparison (a comparison of the image to software
itself), and therefore does not compare PCM information to CCF information. Moreover and as
explained above, the PCM of the present applicants' disclosed embodiments provides an indication
of which software is to be installed but has not yet been installed in the device, whereas Chen's
"image" is an image of a piece of software that is already installed/resident in his device.
Furthermore, Chen performs a comparison to identify differences rather than matches .

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

A. Discussion of independent claim 1

Independent claim 1 recites, inter alia, "comparing the read PCM information with
information from a configuration control file (CCF)." It is respectfully submitted that Chen does
not disclose, teach, or suggest these features. Specifically, Chen describes the following (emphasis
ours) in his paragraph [0041]:

"The generator 107 typically creates a software package by comparing an
existing software image resident in the device memory 1 1 0 of the electronic
device 111 to a newer version of the same software that may be stored in the
software repository 1 13 or the external computer system 128. The generator
107 computes differences in the software images and creates an appropriate
software package."

From the above-cited passage, it is clear that Chen performs a comparison of an
image of an installed piece of software to a newer version of that same software . Chen then
performs a computation of the differences to determine the appropriate software package to install
into his device. Accordingly, since Chen is comparing the software themselves, Chen does not
meet the limitations of present claim 1 that require comparing PCM information with information
from a configuration control file . Thus, claim 1 is allowable over Chen.

It is respectfully submitted that Chen does not meet other limitations of claim 1 . For
example, claim 1 recites, inter alia, "for a match between the PCM information and the CCF
information, obtaining ..." As explained above, Chen in his paragraph [0041] computes differences
between images of the software itself and uses the computed differences to determine which
software package to install into his device. Thus, Chen is not concerned about a "match" against
configuration information and therefore does not pay attention to matching/matches, but is rather
concerned about "differences" between images. Hence, claim 1 is further allowable over Chen.

Claim 1 further recites, inter alia, that the product configuration matrix (PCM)
includes information "information representative of at least one software feature that can be
installed in the electronic device," and claim 1 later recites installing that software feature. Page 5

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

of the present Office Action has appeared to interpret the "image" of Chen as meeting the claimed
"PCM." This interpretation is respectfully traversed.

As clearly recited in claim 1 , the PCM includes information of at least one software
feature that can be installed in the electronic device. In contrast, the "image" of Chen is an image of
existing software resident in his device memory 1 10 of this electronic device 111. Nowhere does
Chen disclose, teach, or suggest storing images (or any other type of information) in his device 1 1 1
that represents a software feature that can be installed (not yet installed) and then installing that
software feature. Thus, claim 1 is further allowable over Chen.

B. Discussion of the other independent claims

Independent claim 13 recites, inter alia, "storing first information in an electronic
device that is indicative of configuration features for the electronic device; storing second
information indicative of configuration features that are available for loading into the electronic
device; automatically comparing the first and second information ." It is respectfully submitted that
Chen does not disclose, teach, or suggest these features. For example and as explained above, Chen
compares an image of the actually installed software to a newer version of that software (an
image-to-software comparison). Thus, Chen does not perform a comparison of information
indicative of configuration features as recited in claim 13.

Furthermore, claim 13 recites, inter alia, "automatically loading a configuration
feature into the electronic device that corresponds to a match between the compared first and second
information." As explained above, Chen in his paragraph [0041] computes differences between
images and uses the computed differences to determine which software package to install into his
device. Thus, Chen is not concerned about "matching" or matches and therefore does not pay
attention to matching/matches, but is rather concerned about "differences" between the images of
the software. Hence, claim 13 is further allowable over Chen.

Independent claim 19 includes recitations that recite, inter alia, "the PCM including
information representative of at least one software feature that can be installed in the electronic
device," "obtaining a configuration control file (CCF) remotely from the electronic device,"
" comparing the read PCM information with information from the obtained CCF ," and "identifying

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

at least one match between the PCM information and the CCF information ." As previously
explained above by way of analogy with respect to claim 1, these limitations in claim 19 are not
disclosed, taught, or suggested by Chen. For example, Chen does not perform a comparison with
configuration file information and does not identify matches (he instead identifies differences).

Independent claim 22 is allowable over Chen, since Chen does not disclose, teach, or
suggest the claimed means for comparing information indicative of configuration features and the
claimed means for loading a configuration feature that corresponds to a match .

Independent claim 27 is allowable since Chen does not disclose, teach, or suggest the
recited PCM information representative of at least one software feature that can be installed and to
be compared with information from an external configuration control file . Chen further does not
meet the limitations of claim 27 that recites a "match."

C. Discussion of the dependent claims

The dependent claims contain recitations that also distinguish over Chen. For
example, dependent claim 4 recites, inter alia, "comparing each position in the alphanumeric string
(of the PCM information) with a corresponding position in a mask in the CCF." Chen does not
meet any of these limitations.

Specifically, Chen's paragraph [0044] describes initializing the value of OxFFFF
(hexadecimal) throughout his memory. As explained in Chen's paragraph [0042], each distinct
binary pattern represents a different binary image package of software existing/resident in his
device. Chen's paragraph [0041] describes that a particular image (for instance as represented by
said OxFFFF decimal number) of existing/resident software is compared with the image of a newer
version of the software.

Thus, since Chen is comparing hexadecimal numbers to each other, he cannot meet
the limitations of claim 4 that require comparing each position in an alphanumeric string with a
corresponding position in a mask . In other words, Chen compares the hexadecimal number OxFFFF
with a hexadecimal number of the image of the newer software version — this number-to-number
comparison of actual elements in a software image of Chen, therefore, is not and cannot be a
comparison with a mask as recited in claim 4. Claim 4 is thus allowable over Chen.

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Application No. 10/804,820

Reply to Office Action dated January 22, 2007

Dependent claims 14 and 21 also recite a mask and related elements. Claims 14 and
21 are thus allowable over Chen, by way of analogy to claim 4, for example.

VI. Conclusion

Overall, none of the references singly or in any motivated combination disclose,
teach, or suggest what is recited in the independent claims. Thus, given the above amendments and
accompanying remarks, the independent claims are now in condition for allowance. The dependent
claims that depend directly or indirectly on these independent claims are likewise allowable based
on at least the same reasons and based on the recitations contained in each dependent claim.

If the undersigned attorney has overlooked a teaching in any of the cited references
that is relevant to the allowability of the claims, the Examiner is requested to specifically point out
where such teaching may be found. Further, if there are any informalities or questions that can be
addressed via telephone, the Examiner is encouraged to contact the undersigned attorney at (206)
622-4900.

The Director is authorized to charge any additional fees due by way of this
Amendment, or credit any overpayment, to our Deposit Account No. 19-1090.

All of the claims remaining in the application are now clearly allowable. Favorable
consideration and a Notice of Allowance are earnestly solicited.

Respectfully submitted,

SEED Intellectual Property Law Group pllc

/Dennis M. de Guzman/

Dennis M. de Guzman
Registration No. 41,702

DMD:wt

701 Fifth Avenue, Suite 5400
Seattle, Washington 98104
Phone: (206)622-4900
Fax: (206) 682-6031

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